Ex Parte Hofmann et al

Patent Trial and Appeal Board

Sep 24, 2012

10558966 (P.T.A.B. Sep. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/558,966 12/01/2005 Oliver Hofmann 05-1020 5764
20306 7590 09/24/2012
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
BABIC, CHRISTOPHER M
ART UNIT PAPER NUMBER
1637
MAIL DATE DELIVERY MODE
09/24/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte OLIVER HOFMANN and ANDREAS MANZ
__________

Appeal 2011-013015
Application 10/558,966
Technology Center 1600
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a method of detecting spores. The Patent Examiner
rejected the claims for obviousness. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
Appeal 2011-013015
Application 10/558,966

2
STATEMENT OF THE CASE
Claims 1-4, 6, 19, 23-25, 43, 47, and 481 are on appeal. (App. Br. 2.)
Claim 1 is representative and reads as follows:
1. A method of detecting spores in a sample comprising the steps of:
irradiating a sample with laser light so as to disrupt any spores present
in the sample, thereby releasing material from within the spores;
collecting the released material; and
subsequently analysing the released intrasporal material so as to
determine the presence or otherwise of bacteria.

The Examiner rejected all the claims under 35 U.S.C. § 103(a) as
unpatentable over Warriner2 and Belgrader.3

ISSUE
The Issue
The Examiner found that Warriner disclosed a method of detecting
spores in a sample. According to the Examiner, Warriner’s method included
“irradiating a sample with laser light so as to disrupt any spores present in
the sample thereby releasing the material from within the spores,” and
collecting “any disrupted material” (Ans. 4), but did not include
subsequently analyzing released intrasporal material to determine the

1 According to the cover sheet of the Office action mailed June 8, 2010,
claim 48 was withdrawn from consideration, but the explanation of the
obviousness rejection in the Office action included it, as does the
Examiner’s Answer. (Final Rej. 2; Ans.4.) Appellants appeal the rejection
of claim 48 (App. Br. 5), and we treat it as rejected.
2 K. Warriner et al., Inactivation of Bacillus subtilis spores on packaging
surfaces by u.v. excimer laser irradiation, 88 J. APP. MICROBIOL. 678-685
(2000).
3 Phillip Belgrader et al., A Minisonicator To Rapidly Disrupt Bacterial
Spores for DNA Analysis, 71 ANAL. CHEM. 4232-4236 (1999).
Appeal 2011-013015
Application 10/558,966

3
presence or otherwise of bacteria (id. at 6). The Examiner found that
Belgrader taught disrupting spores and analyzing the released intrasporal
material “to identify not only the presence of bacteria but also what bacteria
are present.” (Id. at 6.) The Examiner concluded that as Warriner taught
lasers are sufficient to disrupt spores and taught collecting released
intrasporal material, “[a]n ordinary practitioner would have been motivated
to modify the spore disruption method of Warriner et al. to include the
analysis of the intrasporal material as taught by Belgrader et al. in order to
have a device for rapid and accurate analysis of spores in a sample.” (Id.)
Appellants contend that Warriner did not disclose spore disruption,
and that there is no prima facie case of obviousness because the Examiner
has not demonstrated that the cited prior art discloses spore disruption with
laser light. (App. Br. 6-9.) Appellants also contend that in the absence of
spore disruption in Warriner, the combination of Warriner with Belgrader is
illogical (id. at 9-10), and that the combination of Warriner and Belgrader
would not lead to the claimed invention (id. at 10.)
The Examiner responds: “An inherent feature of [Warriner’s]
irradiation of spores with a laser is the resulting disruption of said spores.”
(Ans. 8.)
The dispositive issue is whether the evidence supports the finding that
Warriner taught spore disruption releasing material from within the spores.

Findings of Fact
1. Warriner described irradiating spore-loaded packaging squares with
laser light, placing the irradiated squares in an aqueous solution, and
recovering the spores from the spore suspension. (Warriner 679-680.)
Appeal 2011-013015
Application 10/558,966

4
2. Warriner disclosed:
When u.v. laser-irradiated spores were viewed under the SEM,
the same spore densities were found on both control and irradiated
samples (not shown), suggesting negligible detachment/vaporization
of spores. Furthermore, only a low number of spores appeared to have
collapsed. Indeed, under phase contrast, a majority of the recovered
spores had retained refractility.

(Id. at 682.)

Principles of Law
“The entirety of the evidence must be reviewed in order to determine
whether the claimed invention as a whole would have been obvious to a
person of ordinary skill in the art.” In re Kumar, 418 F.3d 1361, 1369 (Fed.
Cir. 2005).

Analysis
There is no dispute that Warriner described “spore recovery” from a
“spore suspension.” (FF 1.) Appellants point to Warriner’s disclosure that
under SEM, the same spore densities were found on both control and
irradiated samples, and that only a low number of spores appeared to have
collapsed. (FF 2.) According to Appellants, that disclosure rebuts the
Examiner’s finding that Warriner’s method “inherently” disrupted spores.
Put another way, there would have been no intrasporal material to recover
from Warriner’s suspension.
The Examiner asserts that “there is no recitation present in the instant
claims requiring a particular number of spores be disrupted.” (Ans. 8.)
Even if it is assumed that Warriner’s term “collapsed” meant that intrasporal
Appeal 2011-013015
Application 10/558,966

5
material may have been released from within the low number of collapsed
spores, Appellants question whether a person of ordinary skill in the art
would have thought it logical to apply Belgrader’s DNA analysis to
Warriner’s spore suspension. We find that on this record, there is
insufficient explicit or implicit evidence to show that Warriner’s suspension
necessarily included released intrasporal material such as DNA. We
therefore agree with Appellants that a person of ordinary skill in the art
would not have thought it logical to apply Belgrader’s DNA analysis to
material that Warriner described as a spore suspension. The rejection is
reversed.

SUMMARY
We reverse the rejection of claims 1-4, 6, 19, 23-25, 43, 47, and 48
under 35 U.S.C. § 103(a) as unpatentable over Warriner and Belgrader.

REVERSED

dm